Articles Posted in Declaratory Judgments

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Indianapolis, IN. Patent attorneys for Buztronics, Inc. of Indianapolis, Indiana have filed a patent suit seeking that three patents owned by Toy Smith Investments, Inc. of Sumner, Washington be declared invalid and not infringed by Buztronics’ products. The three patents, all entitled “WRIST TOY” are: 6,685,582, 6,971,963, and 7,833,115.Thumbnail image for Pic-Toy.JPG

Buztronics alleges that Toysmith “accused Buztronics of infringement of Toysmith’s patent rights.”

Practice Tip: Declaratory judgment suits are often filed intellectual property cases after the first allegation of infringement is made. The strategy is for the accused infringer to obtain “home court advantage” by having the dispute litigated nearby. This makes it more expensive for the patent owner to litigate, because they must hire local counsel. Coincidentally, two days before Buztronics filed this suit, the Court of Appeals for the Federal Circuit issued an Order clarifying when threats of infringement rise to a level sufficient to trigger declaratory judgment jurisdiction. In 3M Company v. Avery Denison Corporation, the Court stated that declaratory judgment jurisdiction requires more than “a communication from a patent owner to a party merely identifying its patent and the other party’s product line.”

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Indianapolis. IN – Judge Tanya Walton Pratt of the Southern District of Indiana has granted a Partial Summary Judgment for Eli Lilly and CompanyThumbnail image for lilly.jpg of Indianapolis, Indiana in a dispute with licensee Valeant Pharmaceuticals International of Irvine, California involving the costs associated with product liability lawsuits over Lilly’s Parkinson’s disease drug.

Lilly began selling a product called Permax, which is used to treat Parkinson’s disease, in 1989. In March 2002, Lilly entered an exclusive licensing agreement with Amarin Corporation allowing Amarin to market, use and sell Permax in the United States, including the licensed use of Permax trademarks. The parties’ license agreement prohibited either party from assigning rights or obligations under the contract to any third party absent written consent of the other party. In 2004, Valeant purchased the assets of Amarin, including the rights under the Permax license. Lilly provided written consent to this assignment in a letter agreement that also addressed costs and indemnification relating to defending a pending products liability lawsuit involving Permax. The present lawsuit was filed when a dispute arose between Lilly and Valeant over the costs and indemnification relating to the products liability lawsuit. After settlement of one of the products liability cases, Valeant refused to indemnify Lilly. Lilly sought a declaratory judgment requiring Valeant to pay certain litigation and settlement costs relating to the products liability suit.

In the court’s decision, Judge Pratt found that the parties’ contract was clear and unambiguous in providing a schedule for sharing costs associated with the product liability suit. Thus Valeant must pay Lilly pursuant the schedule in the contract.

Practice Tip: This case illustrates that license agreements, which grant the licensee limited rights to use the intellectual property, owned by the licensor, can come with additional responsibilities and obligations. It is important to have an intellectual property attorney draft and review license agreements to ensure that the parties understand what is included.
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Pittsburg, PA – Judge Nora Barry Fischer of the U S District Court for Western District of Pennsylvania has dismissed a suit seeking a declaration a non-infringement of patents owned by a Brownsburg, Indiana company. Patent attorneys for Matthews International Corporation of Pittsburg, Pennsylvannia had filed a lawsuit seeking a declaration of non-infringement of patents owned by Biosafe Engineering, LLC,Thumbnail image for Biosafe.jpg and Digestor, LLC of Brownsburg, Indiana. The patents at issue are patent nos. 5,332,532, Method for disposing of radioactively labeled animal carcasses, 6,437,211, and 6,472,580 Methods for treatment and disposal of regulated medical waste, 7,829,755, System and method for treating infectious waste matter, and 7,910,788, System for treating infectious waste matter, which have been issued by the US Patent Office. Patent attorneys for Matthews also made state law claims of trade libel, defamation, and tortuous interference with prospective contracts.

According to the court’s opinion, Matthews is in the cremation industry and provides “environmentally-friendly alternative to flame-based cremations” through an alkaline hydrolysis process. Biosafe is a competitor and owns patent rights to similar process of disposing various types of bio-waste, however none of its patents reference cremation of human remains. In 2008, Biosafe accused Matthews of infringing its patents. Matthews also alleges that Biosafe told prospective customers that Matthews committing patent infringement. In February 2011, Matthews filed this suit seeking a declaration of non-infringement. Biosafe had filed a motion to dismiss, which the court addresses in its memorandum opinion. The court stated the issue before it as “the patent portion of this motion challenges whether this Court has jurisdiction over a declaratory judgment action where the declaratory plaintiff cannot possibly be liable for direct infringement and no direct infringement has occurred such that the declaratory plaintiff could be found liable for indirect infringement.”

The court found that it did not have jurisdiction to issue a declaration of non-infringement because it found that Matthews had taken no steps towards direct infringement of the patents. The court also found it did not have jurisdiction over the state law defamation, libel and tortuous interference claims. The court dismissed the suit with prejudice.

Practice Tip: In its motion to dismiss, Biosafe argued that the court did not have jurisdiction because there was no “case or controversy” regarding a patent infringement claim, citing Federal Rule of Civil Procedure 12(b)(1). The legal standard for jurisdiction over a suit seeking a declaration of non-infringement of a patent has been significantly revised in recent years following the U.S. Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 132 n. 11 (2007) and its progeny. The court here noted “It is, thus, insufficient in a patent case simply to plead that a declaratory defendant‘s actions have caused economic harm. Instead, under MedImmune, the Federal Circuit has found that an “adverse legal interest” requires a dispute pertaining to a legal right. Arris, 639 F.3d at 1374 (“An adverse legal interest‟ requires a dispute as to a legal right-for example, an underlying legal cause of action that the declaratory defendant could have brought or threatened to bring.”).”
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Fort Wayne, IN – The Northern District of Indiana has granted partial summary judgment in a patent infringement case. Geocel LLC,Geocel.jpg of Elkhart, Indiana, had filed a patent infringement lawsuit in the Northern District of Indiana seeking a declaratory judgment that patent no. RE 41,586, PITCH POCKET AND SEALANT, which has been issued by the US Patent Office and is owned by Chem Link Inc., of Schoolcraft, Michigan, is invalid and has not been infringed.

Geocel filed this patent infringement lawsuit seeking a declaratory judgment that some of claims in the ‘586 patent were invalid and that Geocel had not infringement the patent. Specifically, Geocel alleged claims 21-25 violate the rule against recapture based upon the fact that Chem Link Thumbnail image for Thumbnail image for ChemLink.jpghad previously applied for a patent of similar technology that had been repeatedly rejected by the U.S. Patent Office. The issue in this summary judgment decision was whether claims 21-25 of the ‘586 patent violate the rule against recapture, which “prevents a patentee from regaining through reissue subject matter that he surrendered in an effort to obtain allowance of the original claims.” The court here concluded that the claims did not violate the rule against recapture, and therefore granted partial summary judgment in favor of Chem Link, indicating that the patent is valid. There are still unresolved issues in the case and it remains on the docket.

Practice Tip: As the court explained, Title 35 of the United States Code, Section 251 provides in part that: “Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid . . . by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.” The rule against recapture “prevents a patentee from regaining through reissue subject matter that he surrendered in an effort to obtain allowance of the original claims.” MBO Labs., Inc. v.Becton, Dickinson & Co., 602 F.3d 1306, 1313 (Fed. Cir. 2010) (quoting Hester Indus., Inc. v.Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998)).
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Indianapolis, IN – Patent lawyers for Dataflow Systems, Inc. of Indianapolis, IN, filed a declaratory judgment suit seeking a ruling that the company has not violated certain patents held by Defendants Arrival Star S.A. or Melvino Technologies Limited.

The lawsuit concerns several patents, issued by the U.S. Patent Office, which cover “vehicle tracking and status messaging systems,” typically used in the shipping industry.

The complaint alleges that, early in 2011, the Defendants sent a letter to the Plaintiff asserting patent infringement and proposing a “highly favorable” license. The letter gave a two-week period for reply and threatened that the Defendants would “proceed accordingly here in the court system” if the deadline was not met. The day before the deadline, Plaintiff’s counsel responded, saying their analysis was not complete and promising a substantial reply early the next month, February. Defendants’ counsel then insisted on a reasonable settlement offer by February 1st or else litigation would be brought in the U.S. and Canada. Plaintiffs soon filed for declaratory relief and allege that none of their products include all the limitations of any of the asserted patents’ claims. They further allege that the Defendants, in bad faith, did not perform a pre-suit investigation into infringement.

The patents at issue are: Patent No. 6,486,801, BASE STATION APPARATUS AND METHOD FOR MONITORING TRAVEL OF A MOBILE VEHICLE; Patent No. 6,714,859, SYSTEM AND METHOD FOR AN ADVANCE NOTIFICATION SYSTEM FOR MONITORING AND REPORTING PROXIMITY OF A VEHICLE; Patent No. 6,317,060, BASE STATION SYSTEM AND METHOD FOR MONITORING TRAVEL OF MOBILE VEHICLES AND COMMUNICATING NOTIFICATION MESSAGES; Patent No. 6,748,320, ADVANCE NOTIFICATION SYSTEMS AND METHODS UTILIZING A COMPUTER NETWORK; Patent No. 6,952,645, SYSTEM AND METHOD FOR ACTIVATION OF AN ADVANCE NOTIFICATION SYSTEM FOR MONITORING AND REPORTING STATUS OF VEHICLE TRAVEL; Patent No. 7,030,781, NOTIFICATION SYSTEM AND METHOD THAT INFORMS A PARTY OF VEHICLE DELAY; and Patent No. 7,400,970, SYSTEM AND METHOD FOR AN ADVANCE NOTIFICATION SYSTEM FOR MONITORING AND REPORTING PROXIMITY OF A VEHICLE.
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Indianapolis, Indiana – Patent lawyers for Draper, Inc. of Spiceland, IN, have filed a declaratory judgment lawsuit against MechoShade Systems, Inc., and Joel Berman Associates, Inc., both of Long Island City, NY. In particular, the suit seeks a ruling that Patent No. 6,164,428, titled Wrap Spring Shade Operator (“the ‘428 patent”) and issued by the U.S. Patent Office, as well as certain of the defendants’ trade dress, are invalid and not infringed.

According to the complaint, the plaintiff Draper sells window shades. The defendant Mr. Berman alleged that Draper’s brackets for mounting window shades infring the ‘428 patent and the defendants’ trade dress. The plaintiff, in turn, alleges that the ‘428 patent is invalid for failing to meet the requirements for patentability in Sections, 102, 103, and 112 of the Patent Act and that the appearance of defendants’ brackets is functional, generic, and not capable of protection as trade dress.

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South Bend, Indiana – Patent lawyers for Geocel, LLC of Elkhart, IN, filed a declaratory judgment suit against Chem Link, Inc. of Schoolcraft, MI, requesting that Chem Link’s patent be found to be invalid and not infringed. The patent at issue is Reissue Patent No. RE41,586, titled Pitch Pocket and Sealant, which has been issued by the U.S. Patent Office. The basis for patent invalidity includes alleged violations of the “recapture rule,” which is unique to reissued patents, as well as violations of Sections 102 and 103 of the Patent Act and inequitable conduct.

This case has been assigned to Judge Theresa Springmann in the Northern District of Indiana, and assigned case no.3:10-cv-00474-TLS.
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Indianapolis, Indiana – Patent attorneys for Eli Lilly and Company of Indianapolis, IN, have initiated litigation alleging Sandoz, Inc. of Princeton, NJ, is infringing Patent No. 5,464,826, as issued by the U.S. Patent Officeand titled METHOD OF TREATING TUMORS IN MAMMALS WITH 2′,2′-DIFLUORONUCLEOSIDES.

The ‘826 patent covers the drug marketed under the name GEMZAR(R) for the treatment of abnormal masses of tissue known as neoplasms. The complaint states that, in a separate lawsuit, the ‘826 patent was found invalid on grounds of obviousness-type double patenting, but that Lilly has appealed to the Federal Circuit and believes the ruling will be reversed. Lilly also holds approved New Drug Application No. 20-509 for the use of GEMZAR(R) as a treatment for certain types of cancer.


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Indianapolis, Indiana – Patent infringement lawyers for Eli Lilly and Company of Indianapolis, IN, filed a complaint alleging Actavis Totowa LLC of Little Falls, NJ, and Actavis Elizabeth LLC of Elizabeth, NJ, are infringing Patent No. 5,464,826, titled METHOD OF TREATING TUMORS IN MAMMALS WITH 2′,2′-DIFLUORONUCLEOSIDES and issued by the U.S. Patent Office.

The ‘826 patent covers the drug marketed under the name GEMZAR(R) for the treatment of abnormal masses of tissue known as neoplasms. The complaint states that, in a separate lawsuit, the ‘826 patent was found invalid on grounds of obviousness-type double patenting, but that Lilly has appealed to the Federal Circuit and believes the ruling will be reversed. Lilly also holds approved New Drug Application No. 20-509 for the use of GEMZAR(R) as a treatment for certain types of cancer.
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 Indianapolis, Indiana – Patent lawyers for ICOR International, Inc., of Indianapolis, IN, have filed a complaint seeking a declaratory judgment against E.I. du Pont De Nemours & Company (“DuPont”) of Wilmington, DE. Specifically, ICOR requests a ruling that it is not infringing Patent No. 6,783,691, titled COMPOSITIONS OF DIFLUOROMETHANE, PENTAFLUOROETHANE, 1,1,1,2-TETRAFLUOROETHANE AND HYDROCARBONS, which has been issued by the U.S. Patent Office and assigned to DuPont.
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Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
  • Seventh Circuit
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Paul B. Overhauser
Overhauser Law Offices, LLC
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